Opposition by Segator Pty Limited to registration of trade mark application 1849584 (30) PAGOTO gelato & waffle house (fancy) in the name of FKS Australia Pty Limited

[2020] ATMO 190

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

ReOpposition by Segator Pty Limited to registration of trade mark application 1849584 (30) PAGOTO gelato & waffle house (fancy) in the name of FKS Australia Pty Limited

Delegate:                 Debrett Lyons

Representation:       Opponent: Cooper Mills Lawyers

Applicant: Minas and Associates

Decision:                   2020 ATMO 190

Trade Marks Act 1995 (Cth): Section 52 opposition; s 41 established by opponent; registration refused

Background

1. This decision concerns an opposition to registration filed by Segator Pty Limited (‘the Opponent’) pursuant to s 52 of the Trade Marks Act 1995[1]. The opposed application is in the name of FKS Australia Pty Limited (‘the Applicant’).Details of the application, as accepted, are set out below:

   [1] Further references to sections are references to sections of the Trade Marks Act 1995 (Cth).

Application No.:            

1849584

Filing Date:

15 June 2017

Goods:

Class 30: Aromatic preparations for ice-creams; Biscuits with an iced topping; Cooling ice; Dairy ice cream; Edible ice powder for use in icing machines; Edible ices; Frozen beverages (edible ices); Frozen ices; Frozen yoghurt (confectionery ices); Frozen yogurt (confectionery ices); Fruit ice cream; Fruit ices; Ice; Ice beverages with a chocolate base; Ice beverages with a cocoa base; Ice beverages with a coffee base; Ice candy; Ice confectionery; Ice confections; Ice cream; Ice cream bars; Ice cream cones; Ice cream confectionery; Ice cream desserts; Ice cream powder; Ice cream products; Ice cream sandwiches; Ice cream stick bars; Ice cubes; Ice desserts; Ice for refreshment; Ice in block form; Ice in flake form; Ice lollies; Ice, natural or artificial; Iced coffee (coffee based beverages); Iced fruit cakes; Iced lollies; Iced sponge cakes; Iced tea; Ices; Imitation ice cream; Mixtures for making ice cream; Mixtures for making water ices; Non-dairy ice cream; Non-medicated iced confectionery; Powder for edible ices; Powder for making ice cream; Powders for edible ices; Powders for ice cream; Preparations for making ice cream; Sauces for ice cream; Sherbets (ices); Sherbets (water ices); Sorbets (ices); Sorbets (water ices); Soya based ice cream products; Water ice; Water ices; Yoghurt based ice cream (ice cream predominating)

(‘the Goods’)

Trade Mark:

(‘the Trade Mark’)

1. The application was examined as mandated by s 31 and accepted for registration subject to an endorsement as follows:

   ‘The applicant has advised that the English translation of the Greek word PAGOTO appearing in the trade mark is CONGEALED ICE.’

2. Following the advertisement of acceptance of the application for possible registration in the Australian Official Journal of Trade Marks, the Opponent filed a Notice of Intention to Oppose the registration followed by a Statement of Grounds and Particulars (‘the SGP’).  The Applicant subsequently filed a Notice of Intention to Defend.

3. Subsequently, the parties filed evidence under the Trade Mark Regulations 1995 (‘the Regulations’).  Much of this evidence has no bearing on the decision I have made for reasons that follow and I have referred only to that which is pertinent.

4. Whilst the parties were reminded of their right to be heard in person, in the end both were content to rely on written submissions.  The onus of proving its opposition rests with the Opponent[2] and in that regard the SGP nominated several grounds of opposition including s 41, which it particularised in the SGP as follows:

   (a) The English translation of the Greek word PAGOTO is ICE CREAM. The words GELATO & WAFFLE HOUSE are wholly descriptive. (b) The device element of the opposed mark denotes a scoop of ice cream. (c) Accordingly, the opposed mark is wholly descriptive and not capable of distinguishing the claimed goods in class 30.

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

5. In its brief written submissions the Opponent refers to the decision of Hearing Officer Thompson in an earlier unreported decision between the parties from December 2016 (‘the Earlier Decision’).

6. In the Earlier Decision Mr Thompson refused registration of trade mark 1660252 for pagoto gelato & waffle house (words) under s 41 of the Act.  The Opponent submits that the same considerations apply as in the Earlier Decision and the Trade Mark should be refused since:

   (i)  the words PAGOTO, GELATO, WAFFLE and HOUSE are descriptive individually and in combination;

   (ii)  the Opponent’s Evidence in Support proves and Applicant’s Evidence in Answer admits that the word GELATO translates from Greek to English as ‘ice cream’ and would be understood as such by consumers in Australia;

   (iii)  the device element of the opposed mark represents a scoop of ice-cream and therefore does not add any degree of distinction to the mark or separately distinguish the goods but merely illustrates the already descriptive words ‘pagoto / ice cream’ and ‘gelato’; and

   (iv)  the Applicant has not filed evidence that could satisfy the Registrar that the opposed mark could be accepted under the special circumstances set out in ss 41(3) or 41(4).

7. In the Earlier Decision Hearing Officer Thompson decided that the word mark pagoto gelato & waffle house was not inherently adapted to distinguish in relation to class 30 goods, in that case being:

   Dairy ice cream; Ice cream; Ice cream bars; Ice cream confectionery; Ice cream desserts; Ice cream products; Ice cream sandwiches; Ice cream stick bars; Non-dairy ice cream; Soya based ice cream products; Yoghurt based ice cream (ice cream predominating); Frozen beverages (edible ices); Frozen cakes; Frozen confectionery; Frozen confections; Frozen dairy confections; Frozen desserts; Frozen ices; Frozen pastries; Frozen yoghurt (confectionery ices); Frozen yogurt (confectionery ices); Non-dairy frozen dessert products; Edible ices; Fruit ices; Ices; Sherbets (ices); Sherbets (water ices); Sorbets (ices); Sorbets (water ices); Water ices; Pastries; Cakes; Gelato

   (‘the Earlier Goods’)

8. It is noteworthy that in the case of application 1660252 the endorsement attaching to acceptance of that mark was:    

   ‘The applicant has advised that the English translation of the Greek word PAGOTO appearing in the trade mark is ICE CREAM’

9. Hearing Officer Thompson reasoned that:

   … the Applicant’s submissions … must be read in the light of the Applicant’s … freely given, advice to the Registrar during the examination of the Trade Mark that “the English translation of the Greek words PAGOTO appearing in the trade mark is ICE CREAM”. 
   …

   The meaning of the words ‘gelato’ and ‘waffle’ are plain enough.  A gelato is an Italian ice cream and a waffle is cake formed from batter with a series of indentations on either side.

   Additionally, for completeness, the Oxford Dictionary gives the following definition for the word ‘house’:

   A building where public refreshment is provided; a public house, restaurant, inn, etc.; the management of this.

   I return to the word ‘pagoto’; in Cantarella the Court said:

   Once the "ordinary signification" of a word, English or foreign, is established an enquiry can then be made into whether other traders might legitimately need to use the word in respect of their goods. If a foreign word contains an allusive reference to the relevant goods it is prima facie qualified for the grant of a monopoly. However, if the foreign word is understood by the target audience as having a directly descriptive meaning in relation to the relevant goods, then prima facie the proprietor is not entitled to a monopoly of it.

   The Greek word ‘pagota’ is directly descriptive of ‘ice cream’ because it translates into English as ‘ice cream’.  Logically, other traders who wish to stress that their ice cream is made according to Greek recipes would need to use the word ‘pagoto’ to stress this.  And, members of the public, seeking to purchase Greek style ice cream, would know to look for the word ‘pagoto’.

   In my view, the words which form the Trade Mark do not combine in a manner which either is, or is capable of becoming distinctive: the Trade Mark functions so as to state the exact nature of the Goods and where they may be bought.

   Accordingly, I consider that the Trade Mark has a very low inherent adaptation to distinguish and … [t]he ground under section 41 of the Act is established

   Discussion

   Section 41

10. Section 41 of the Act provides:

    41Trade mark not distinguishing applicant’s goods or services

    (1)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.

    Note:For goods of a person and services of a person see section 6.

    (2)A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

    (3)This subsection applies to a trade mark if:

    (a)the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

    (b)the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

    (4)This subsection applies to a trade mark if:

    (a)the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

    (b)the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

    (i)the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

    (ii)the use, or intended use, of the trade mark by the applicant;

    (iii)any other circumstances.

    Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

    (a)    the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

    (b)    the time of production of goods or of the rendering of services.

    Note 2:For goods of a person and services of a person see section 6.

    Note 3:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).

    (5)For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

    Note 1:For applicant and predecessor in title see section 6.

    Note 2:If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

11. Much of what Mr Thompson had to say of the way s 41 is to be applied has direct application once more and does not require repetition.  As he explained, the initial consideration is to discover the extent, if any, to which the Trade Mark is inherently adapted to distinguish the Goods from the similar goods of other traders.  The question before me is whether the present application has an improved capability of distinguishing the Goods over the application considered by Mr Thompson.  Certainly, the application is now for a fancy Trade Mark but there are other points of difference.  The Goods and the Earlier Goods are not co-terminus, but the overlap is so broad that the reasoning of the Earlier Decision applies to the Goods.  Further, the endorsement offered up by the Applicant has now been adjusted so that whereas it previously translated the Greek word ‘pagoto’ into English as ice-cream it now uses the expression, congealed ice.  I will say more of this shortly.

12. Insofar as the application is now for a fancy Trade Mark, the Opponent’s position is that the cases of E & J Gallo Winery v Lion Nathan (Aust) Pty Ltd (2010) 86 IPR 224 and Angel Gowns Australia Inc v Angel Gowns for Australian Angel Babies Inc (2017) 133 IPR 99 go against the Applicant for the reason that, aside from the word elements of the Trade Mark, the device element “represents a scoop of ice-cream and does not add any degree of distinction to the mark or separately distinguish the goods but merely illustrates the already descriptive words ‘pagoto / ice cream’ and ‘gelato’.”

13. The Applicant, on the other hand, is keen to remind me that when assessing the Trade Mark’s capacity to distinguish, it must be considered as a whole[3].  Essentially, its submissions in that regard are that:

    To the extent that the words PAGOTO GELATO & WAFFLE HOUSE are descriptive individually and in combination as a descriptive phrase, the Composite Mark must be considered as a combination of elements – the stylised representation of a scoop of ice cream or gelato; that sits on-top of the rectangle containing the stylised representation of PAGOTO using a fancy typeface.

    …

    the device mark … incorporates the words PAGOTO GELATO & WAFFLE HOUSE with a black background colour for the device; the word PAGOTO appears in a pastel blue colour (commonly called as 'baby blue', 'pastel blue', 'sky blue' or 'powder blue'), using a fancy typeface, with the word enclosed in a rectangle. …

    … the use of the pastel blue colour alludes to the peaceful, calming, soothing and enjoyable experience of consumers of the ice cream, frozen ices and other goods provided by the Applicant.

    …

    The form of the device is a sufficiently unusual representation of a scoop of ice cream or gelato, in combination with the stylised representation of PAGOTO using a fancy typeface, to create a mark that is unique enough to be prima facie capable of distinguishing.

    [3] Diamond T Motor Car Company [1921] 2 Ch 583.

14. So, recognising that the Trade Mark is a combination of elements, the claimed features are (i) the use a pastel blue colour; (ii) the word ‘pagoto’ in presented in a fancy typeface set within a rectangle, and (iii) the stylised representation of a scoop of ice cream or gelato.

15. It is not illegitimate for me to consider the value of those elements, for whilst I accept that a distinctive trade mark may be the combination of non-distinctive elements, each case entails its own unique matrix.  The Trade Mark as represented here and on the Register carries no endorsement which limits the potential registration of the Trade Mark to certain colour(s).  Section 70(3) provides that a trade mark registered without any limitations as to colour is taken to be registered for all colours.  The colouration is thus not a point of distinction.  As for the presentation of the word ‘pagoto’, the font style is unremarkable and its enclosure within a simple geometric form is commonplace. 

16. I now return to the word, ‘pagoto’, and recall that Hearing Officer Thompson found the Greek word to be directly descriptive of ‘ice cream’ because it translates into English as ‘ice cream’.  That finding was based on the evidence in the Earlier Decision of Ms Koulax, the sole director of the Opponent.  The Applicant had submitted[4] in that case that:

    ‘Pagoto’ is a generic Greek word that has multiple meanings depending on context. In one usage, it signifies a very cold dessert ranging from frozen ices to ice cream. ‘Pagoto’ only means ‘ice cream’ in this narrow context.

    [4] Supported by the unsworn affidavit of Mr Costa Potiris, a translator.

17. Mr. Thompson responded that:

    … the Applicant’s submissions in this regard must be read in the light of the Applicant’s previous, and freely given, advice to the Registrar during the examination of the Trade Mark that “the English translation of the Greek words PAGOTO appearing in the trade mark is ICE CREAM”.  This advice is endorsed on the application.  Further, it is axiomatic that ‘[T]he meaning of all words is governed by their context and how words are understood depends upon the universe of discourse’: the context here is the denotation of the Greek word ‘pagoto’ when used in relation to the Goods …

18. Another decision has relevance to my findings. During the course of the present opposition a decision was made on 19 September 2019 by Hearing Officer Walters on a procedural matter involving the Opponent’s objection to the Applicant’s request for an extension of time to file evidence in answer.  The matter is reported[5] and I need only refer to it in outline.  The Applicant had been required to file its evidence in answer by 11 January 2019 but on that day sought an extension of time (‘EOT’) within which to do so.   The material of relevance is a translation of the word ‘pagoto’ from the Etymological Dictionary of Modern Greek and a declaration by Constantin Skouras (‘the Skouras declaration’), director of the Applicant, annexing, inter alia, a declaration made by Costa Potiris, an accredited Greek translator[6].  The EOT was sought under reg 5.15 of the Regulations to extend the period in which to file evidence in answer, being the Skouras declaration.  In the alternative, the Applicant sought exercise of the Registrar’s discretion under reg 21.19 of the Regulations to admit the late filed Skouras declaration.  Both regulations were considered comprehensively by Hearing Officer Walters but his decision was to refuse to grant the EOT and decline to exercise his discretion to admit the late filed evidence into the substantive opposition.

    [5] 2019 ATMO 126

    [6] The same Mr Potiris referred to in the previous footnote.

19. Notwithstanding that decision, the Applicant’s submissions before me appear to list that excluded material and I am asked it seems to revisit Mr Walters’ decision for various reasons.  I decline to do so as a matter of procedural correctness and administrative fairness[7].  If wrong in making that decision, I nevertheless determine that the excluded material has no influence on the outcome of my decision.  In essence, the matter of the meaning of the word ‘pagoto’ was considered by Mr Thompson and I follow his finding that the meaning of the word ‘pagoto’ is contextually dependent and that, in relation to the Goods, would be understood as meaning ice-cream.  In my assessment the endorsement offered up by the Applicant in respect of the Trade Mark is an attempt to create a point of distinction where none exists.

    [7] Noting here in addition to other factors that the Applicant’s submissions at an earlier time assert that the Skouras declaration and the definition of ‘pagoto’ were of prime importance to the ground under s 62(b) of the Act, a ground on which I have not needed to found my decision.

20. I have considered the last of the differences between the word mark of the Earlier Decision and the Trade Mark.  Whilst I pay regard to the principles of law pertaining to the assessment of s 41 in relation to composite marks, the descriptive word ‘pagoto’ has by its re-positioning and relative dominance in the Trade Mark devalued that small degree of distinctiveness contributed by the scoop device.  What now dominates the Trade Mark is a word which is descriptive of the Goods and of no distinctive value.  The remaining words are descriptive and de minimus in their overall impact.  It is not necessary to find whether s 41(3) applies in this case – s 41(4) clearly applies and the Applicant has put on no evidence that would satisfy me that the mark is likely to distinguish having regard to the criteria set out in s 41(4)(b).

    Decision

1. Section 55 relevantly provides:

   55Decision

   (1)Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

   (a)to refuse to register the trade mark; or

   (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

   Note:For limitations see section 6.

2. I have found the Opponent has established a ground of opposition.

   Costs

3. The Opponent has sought an award of costs in its favour.  I see no reason to depart from the general rule that costs follow the event.  As the Opponent has established a ground of opposition, I award costs against the Applicant under s 221 in line with the amounts in Schedule 8 of the Regulations.

   Debrett Lyons
   Hearing Officer
   Delegate of the Registrar of Trade Marks
   14 December 2020